Japan Press Serv., Inc. v. Japan Press Serv., Inc.
| Decision Date | 02 January 2013 |
| Docket Number | 11 CV 5875 (SJF)(ETB) |
| Parties | JAPAN PRESS SERVICE, INC., a California corporation, Plaintiff, v. JAPAN PRESS SERVICE, INC., a Hawaii corporation, Defendant. |
| Court | U.S. District Court — Eastern District of New York |
On December 2, 2011, plaintiff Japan Press Service, Inc., a California corporation ("plaintiff), commenced this action against defendant Japan Press Service, Inc., a Hawaii corporation ("defendant"), pursuant to the Lanham Act, as amended by the Federal Trademark Dilution Act ("FTDA"), 15 U.S.C. §§ 1114-1117 and 1125(a) and (c), alleging trademark infringement, false designation of origin and dilution of the trademark(s) "Nikkan Sun" and "Daily Japanese Sun." Defendant now moves pursuant to Rules 12(b)(2) and (3) of the Federal Rules of Civil Procedure and 28 U.S.C. § 1406 to dismiss the complaint or, in the alternative, pursuant to 28 U.S.C. § 1404(a) to transfer this action to the United States District Court for the District of Hawaii. For the reasons stated herein, the branches of defendant's motion seeking dismissal of the complaint are granted.
Plaintiff is a California corporation with its principal place of business in Torrance, California. (Complaint ("Compl."), ¶ 3).
Defendant is a Hawaii corporation that publishes a daily Japanese newspaper and has its principal place of business in Honolulu, Hawaii, (Declaration of Ichizo Kobayashi ("Kobayashi Decl"), ¶¶ 2, 4). According to Ichizo Kobayashi, the president and CEO of defendant, (Kobayashi Decl., ¶ 1), on January 27, 2003, he and Tai Makino ("Makino''), the majority shareholder of both plaintiff and plaintiff's Japanese affiliate, Kabushiki Gaisha JPN, Inc. ("Kabushiki Gaisha"), incorporated defendant in the State of Hawaii. (Kobayashi Decl., ¶ 4). On February 8, 2003, defendant issued one hundred (100) shares of Class A common stock to Kobayashi and one hundred (100) shares of Class A common stock to Makino. (Kobayashi Decl., ¶ 5). Kobayashi maintains that since 2003, defendant has published, printed and distributed a publication known as "'Nikkan San' (a/k/a Japanese Daily Sun)" in the State of Hawaii, but has never published, printed or distributed any type of publication in New York or anywhere else outside of the State of Hawaii. (Kobayashi Decl., ¶¶ 13, 14). According to Kobayashi, there is a Japanese language publication known as the "Bi-Daily Sun" currently distributed in the State of New York, which is published and distributed by Daily World Press, Inc. ("World Press"), a company that has no affiliation with defendant. (Kobayashi Decl., ¶ 15). According to a "Trademark Consent Agreement" between World Press and plaintiff effective January 21, 2008 ("Consent Agreement"), World Press is a publisher of a Japanese-language daily newspaper entitled "Daily Sun New York" which is distributed within the Northeast UnitedStates, including New York, New Jersey, Connecticut and Pennsylvania. (Declaration of Fredric H. Aaron ("Aaron Decl."), Ex. E).
On or about March 25, 2003, Kabushiki Gaisha and defendant entered into a series of agreements ("the March 25, 2003 Contracts"), effective for a two (2)-year term commencing on April 1, 2003, pursuant to which, inter alia: (1) Kabushiki Gaisha was to provide news articles "in the same formats and sizes of the (NIKKAN SAN) which is being published in Los Angeles * * * on the days the (NIKKAN SAN) is published in Los Angeles" in exchange for which defendant would make monthly payments to Kabushiki Gaisha in the amount of seven thousand dollars ($7,000.00); (2) Kabushiki Gaisha granted defendant the use of "the names and logos of NIKKAN SAN, The Japanese Daily Sun and nikkan san (in Japanese) for the newspaper which [defendant] publish [sic] in Hawaii;" (3) Kabushiki Gaisha agreed not to "grant the usage of the names and logos of NIKKAN SAN, The Japanese Daily Sun and nikkan san (in Japanese) to anyone other than [defendant] in Hawaii;" and (4) the parties thereto designated the Tokyo District Court as the "court having jurisdiction over any litigation arising out of th[e] Contract." (Compl., Ex. B).
On or about March 8, 2007, Makino and Kobayashi incorporated NIKKAN SUN.COM INC. ("the New York joint venture") in the State of New York as a joint venture for the purpose of distributing a Japanese language newspaper in New York. (Kobayashi DecL, ¶ 6). Kobayashi maintains that defendant was never a shareholder or affiliate of the New York joint venture. (Kobayashi Decl., ¶ 9). According to Kobayashi, although he invested five hundred thousand dollars ($500,000.00) in the New York joint venture, Makino failed to invest the two hundred thousand dollars ($200,000.00) that he had promised to invest in the New York joint venture.(Kobayashi Dec]., ¶¶ 7-8).
On April 10, 2007, Kobayashi purchased all of Makino's shares of common stock in defendant. (Kobayashi Decl.,¶ 10).
Pursuant to the January 21, 2008 Consent Agreement between World Press, its president Jin Yoshida ("Yoshida"), plaintiff and Makino, inter alia: (a) World Press (i) consented to plaintiff's use of the mark "Nikkan San," (ii) agreed not to take any action to interfere with plaintiff's use of the mark "Nikkan San," (iii) agreed to abandon two (2) trademark applications it filed on March 29, 2007 with the United States Patent and Trademark Office ("USPTO") for the marks "Sun New York" and "Daily Sun New York" and to refrain from filing a new application in the United States for any of the following marks: "New York Daily Sun," "Sun New York," "Daily Sun," "Nikkan Sun," "The Japanese Daily Sun," or "Nikkan San," and (iv) agreed to refrain from selling, marketing, distributing and/or franchising a daily newspaper with a title including the phrases "Daily Sun," "Nikkan Sun," or "Nikkan San" within the States of California or Hawaii; (b) plaintiff (i) consented to World Press's use of the mark "Daily Sun" within the Northeast United States and (ii) agreed not to take any action to interfere with World Press's use of the mark "Daily Sun" within the Northeast United States; and (c) the parties thereto agreed (i) that plaintiff shall have the right to sell, market, distribute and/or franchise a daily, weekly or monthly newspaper with a title containing the phrases "Nikkan Sun" or "Nikkan San" within the Northeast United States and (ii) that the Consent Agreement shall be binding upon their successors and assigns. (Aaron Decl., Ex. E).
On March 24, 2008, defendant registered the trade names "NIKKAN SUN" and "JAPANESE DAILY SUN" with the State of Hawaii, Department of Commerce and Consumeraffairs. (Compl., Ex. C; Kobayashi Decl., ¶ 11). According to plaintiff, defendant filed for the trademarks, which it contends are "deceptively similar to Plaintiff's trademark," without the notice or approval of either plaintiff of Kabushiki Gaisha. (Compl., ¶ 9).
According to Kobayashi, in or about April 2008, he and Makino decided to wind down the New York joint venture because it was not profitable. (Kobayashi Decl., ¶ 12). However, records from the New York State Department of State, Division of Corporations ("NYSDOS") indicate that the New York joint venture was dissolved on January 7, 2010. (Aaron Decl., Ex. F).
By letter dated August 26, 2009, defendant's counsel notified Makino, inter alia, that defendant no longer intended to purchase news content from him and owned the rights to the trade names "Nikkan San" and "Japanese Daily Sun," as well as any corresponding trademarks, "based on its first appropriation and continued use of said trade names and trade marks in the State of Hawaii." (Compl., ¶ 10). According to plaintiff, by terminating those contracts, defendant forfeited its right to continue using the names owned by plaintiff, including the mark "Nikkan San." (Compl., ¶ 10).
On or about October 1, 2009, plaintiff filed an application with the USPTO requesting registration of the mark "Nikkan San," which translates in English as "Japanese Daily Sun." (Aaron Decl., Ex. C). The mark "Nikkan San," consisting of "standard characters without claim to any particular font, style, size, or color," was registered with the USPTO on November 2, 2010 under registration number 3,869,321. (Aaron Decl, Ex. D). The certificate of registration indicates, in relevant part, that "no claim is made to the exclusive right to use 'Nikkan', apart from the mark as shown." (Id.)
According to Kobayashi, defendant has never engaged in, or transacted, any business inthe State of New York, and never had an office or bank account in New York. (Kobayashi Decl., ¶¶ 9,14). Kobayashi avers that most of the parties' dealings occurred in Honolulu, Hawaii; that none of the key events alleged in the complaint occurred in New York; that most of the witnesses and key evidence are located in Hawaii; that he expects to be a witness at any trial in this action and he resides in Honolulu, Hawaii; that he expects Makino, who resides "closer to Hawaii than New York," i.e., in Los Angeles and Japan, to also be a key witness at trial; and that he anticipates that six (6) of defendant's current employees, all of whom reside in Honolulu, Hawaii, to also testify at any trial in this action, (Kobayashi Decl., ¶¶ 3, 16-19).
On December 2, 2011, plaintiff filed a complaint against defendant alleging claims for trademark infringement in violation of Section 32 of the Lanham Act, 15 U.S.C. §§ 1114-1117 (); false designation of origin and false description in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (); and dilution of a trademark in violation of Section 43(c) of the Lanham Act, as amended by the FTDA, 15 U.S.C. § 1125(c) (). Specifically, plaintiff alleges that defendant's continued use of the name "Nikkan San" infringes upon plaintiff's registered trademark; that defendant's conduct "constitutes the use of symbols or...
To continue reading
Request your trial